Multi-Jurisdictional Filing Strategy

You've searched your mark and assessed the risks. Now comes a critical strategic decision: where should you file your trademark application? This chapter explains how to choose the right jurisdictions based on your business model, customer base, and budget.

The Territoriality Principle

Trademark rights are territorial, not global. A US trademark registration protects you only in the United States. An EU trademark protects you only in the 27 EU member states. There is no such thing as a "worldwide trademark" that covers every country with one filing.

This geographic limitation has direct business implications. If you operate a restaurant in California with no plans to expand internationally, a US federal trademark is likely sufficient. But if you run an e-commerce business shipping to Europe, or a SaaS platform with international customers, you need protection in multiple jurisdictions.

The territoriality principle means you must make strategic choices about where to invest in trademark protection. Register where you have customers, where you operate, or where you plan to expand.

Understanding Your Market

Before deciding where to file, analyze where your business operates and where your customers are located.

Ask yourself:

• Where do your current customers live?
• Do you ship products internationally or serve customers across borders?
• Where do you have physical operations (offices, warehouses, retail locations)?
• Where do you plan to expand in the next 3-5 years?
• Are you a digital business (SaaS, e-commerce) with borderless customers?

Business model considerations:

A brick-and-mortar restaurant with locations only in Texas might file only in the US. An e-commerce store selling to US and UK customers needs protection in both jurisdictions. A SaaS company with customers worldwide should prioritize major markets (US, EU, UK) and consider phased expansion to other regions.

Digital businesses face unique challenges. Your website may be accessible globally, but you can't afford to register in 150+ countries. Focus on where you generate revenue, where competitors operate, and where enforcement is practical.

United States (USPTO)

The United States Patent and Trademark Office (USPTO) administers federal trademark registrations covering all 50 states, the District of Columbia, and US territories.

Use in commerce requirement:

The US requires that you either currently use your mark in interstate or foreign commerce (selling goods or services across state lines or internationally) or have a bona fide intent to use it within approximately 3-4 years.

This means you cannot register a mark in the US purely to "reserve" it without plans to use it. You must provide specimens showing actual use, and you must continue using the mark to maintain your registration.

When to file in the US:

• You serve US customers (any state)
• You operate a business in the US
• You ship products to or from the US
• You provide services to US clients
• You plan to enter the US market within 3-4 years

The US market represents over 330 million consumers and is critical for most businesses targeting North America.

European Union (EUIPO)

The European Union Intellectual Property Office (EUIPO) administers EU trademarks (EUTMs) that cover all 27 EU member states with a single filing.

Registration-based system:

Unlike the US, you do not need to prove use in commerce when filing an EUTM application. You can apply for a trademark before launching your product or service. However, if you don't use the mark within 5 years of registration, it becomes vulnerable to cancellation for non-use.

SME Fund benefits:

Small and medium-sized enterprises can receive 50% reimbursement (up to €850) for EUTM filing fees through the SME Fund. You must apply for the voucher before filing your application.

Fast Track option:

If you select goods and services descriptions from the Harmonised Database, your application may be eligible for Fast Track processing (approximately 4 months instead of 5-6 months).

All-or-nothing coverage:

An EUTM is unitary. You either get protection in all 27 countries or none. If an opposition succeeds based on a prior mark in even one member state, your entire EUTM application fails. However, you can convert a refused EUTM into national applications in countries where no conflict exists, preserving your original filing date.

When to file in the EU:

• You serve customers in any EU country
• You operate in the EU or ship goods there
• You plan European expansion
• You want cost-effective coverage of multiple European countries

The EU represents over 450 million consumers across 27 countries, making it the second-largest market after China.

United Kingdom (UKIPO)

Following Brexit in 2021, the United Kingdom operates a separate trademark system from the EU.

Post-Brexit considerations:

EUTMs filed before Brexit were automatically cloned into equivalent UK trademark registrations. However, EUTMs filed after January 1, 2021 do not provide UK coverage.

If you need protection in both the EU and UK today, you must file two separate applications: one EUTM and one UK trademark.

When to file in the UK:

• You serve UK customers specifically
• The UK is a strategic market separate from your EU strategy
• You have UK operations or partners
• You're filing post-Brexit and need both EU and UK coverage

Many businesses file in both the EU and UK to ensure comprehensive European coverage. Combined cost: approximately €850 + £200 = ~€1,050-1,100 total.

Other Key Jurisdictions

Beyond the US, EU, and UK, several other jurisdictions may be strategically important depending on your business.

Canada (CIPO):

• Coverage: Canada
• Cost: CAD $330-450 per class
• System: Use-based (similar to US)
• Timeline: 12-18 months
• When to file: Serving Canadian customers or expanding to North America

Australia (IP Australia):

• Coverage: Australia
• Cost: AUD $330-500 per class
• System: Intent-to-use acceptable
• Timeline: 6-12 months
• When to file: Australian market strategy, Asia-Pacific expansion

China (CNIPA):

• Coverage: China
• Cost: CNY 300 per class (~$40-50)
• System: First-to-file (no use requirement)
• Timeline: 9-12 months
• Risk: Trademark squatting is common
• When to file: Operating in China or plan to; file early to prevent squatting

Japan (JPO):

• Coverage: Japan
• Cost: ¥12,000 base + class fees (~$150-200 per class)
• System: First-to-file
• Timeline: 10-14 months
• When to file: Japanese market expansion

For most businesses, the US and EU represent the highest-priority markets. Additional jurisdictions depend on your specific customer base and expansion plans.

National vs Regional Filings

You can file trademarks at three levels: national, regional, or international.

National filings:

File directly with individual country trademark offices (USPTO, UKIPO, CIPO, etc.). Each country has separate requirements, fees, and processes.

Pros:

• Most control over application
• No dependency on other filings
• May be cheaper for 1-2 countries

Cons:

• Must manage multiple applications separately
• Different requirements per country
• More expensive for 3+ countries

Regional systems:

Regional trademark systems allow one filing to cover multiple countries.

Regional systems are cost-effective when you need coverage in most or all member states. If you only need 1-2 countries from a region, national filings may be cheaper.

Cost-Benefit Analysis

Filing in multiple jurisdictions requires budget planning. Here's a cost comparison for common scenarios.

ROI considerations:

Where do you generate revenue? If 80% of your revenue comes from the US and only 5% from Europe, prioritize the US filing. If you have equal distribution, file in both.

Consider both current revenue and future expansion. A trademark filing costs $250-$850 upfront but protects your brand for 10+ years. It's cheaper to file proactively than to rebrand later.

Priority Dates and the Paris Convention

The Paris Convention gives you a 6-month priority window to file in additional countries while claiming your original filing date.

How it works:

1. File in your home country (e.g., US on January 1, 2025)
2. Within 6 months (by July 1, 2025), file in other countries
3. Your later filings claim the January 1 priority date

This is critical because trademark rights are often determined by who filed first. If you file in the US on January 1 and claim priority when filing in the EU on May 1, your EU filing date is treated as January 1 for priority purposes.

Strategic use of priority:

File in your most important market first, then expand to other jurisdictions within 6 months. This allows you to test the market, assess trademark strength, and make informed decisions about international expansion while preserving your priority date.

Phased Filing Strategy

You don't need to file everywhere at once. A phased approach spreads costs over time while protecting critical markets first.

Startup strategy (Year 1):

File in your core market where you generate revenue.

• US business → File USPTO
• EU business → File EUIPO
• Global digital business → File US + EU

Budget: $250-$1,200

Scale-up strategy (Year 2-3):

Add secondary markets as revenue grows.

• Add UK if serving British customers post-Brexit
• Add Canada if expanding to North America
• Add Australia for Asia-Pacific presence

Budget: $500-$1,000 additional per market

Enterprise strategy (Year 3+):

Expand to additional markets as business justifies.

• Add regional systems (OAPI, ARIPO, GCC) for specific markets
• Add major national markets (China, Japan) if operating there
• Consider Madrid Protocol for 4+ countries (see Chapter 14)

This phased approach allows you to expand trademark protection as revenue and market presence grow, without overcommitting budget early.

Budget Considerations by Business Type

Different businesses have different trademark needs. Here's how to prioritize based on business model.

Budget allocation:

Most businesses should allocate $1,000-$2,000 for initial trademark filings covering core markets (US and/or EU). Plan for additional $500-$1,000 per jurisdiction as you expand.

Don't forget renewal costs: US requires filings at years 5-6 and 9-10, then every 10 years. EU and most other jurisdictions renew every 10 years. Budget for long-term maintenance, not just initial filing.

SaaS and Digital Business Considerations

Digital businesses (SaaS, e-commerce platforms, mobile apps) face unique trademark challenges because their services are accessible globally.

Classification considerations:

Digital products and services often fall into multiple trademark classes:

• Class 9: Software, mobile apps, downloadable programs
• Class 35: Online retail services, advertising, e-commerce platforms
• Class 38: Telecommunications, data transmission
• Class 42: Software as a Service (SaaS), cloud computing, platform hosting

You may need to file in 2-4 classes depending on your offerings, multiplying costs. A US filing covering Classes 9, 35, and 42 costs $750-$1,050 (3 classes × $250-$350).

International customer base:

SaaS platforms often have customers worldwide from day one. Prioritize jurisdictions where:

• You have the most paying customers
• Competitors operate
• Enforcement is practical and effective
• You have payment processing or corporate presence

For most SaaS companies, the US and EU are essential. Add UK post-Brexit. Consider Canada and Australia as secondary markets.

Cloud services and server locations:

Where your servers are located matters less than where your customers are. A SaaS company with servers in Ireland but customers primarily in the US should prioritize USPTO filing.

Platform compliance:

Apple App Store, Google Play, and Amazon all have trademark policies. Registering your app name as a trademark helps you enforce your rights on these platforms and defend against impersonation.

Domain name coordination:

File trademarks in jurisdictions matching your domain strategy. If you use .com (US), .eu (Europe), and .uk domains, file in US, EU, and UK to align protection with your online presence.

Jurisdictions Comparison Summary

Here's a side-by-side comparison of the major trademark jurisdictions to help you make strategic decisions.

Key takeaways:

• Best value for coverage: EUIPO (27 countries for €850)
• Lowest cost: China (but trademark squatting is high risk)
• Fastest processing: EUIPO Fast Track (~4 months)
• Largest market: China (1.4B), followed by EU (450M) and US (330M)
• Use requirements: US and Canada require proof of use; most others don't

Making Your Filing Decision

Use this decision framework to determine where to file your trademark application.

Step 1: Identify where you currently operate

List all countries where you:

• Have paying customers
• Ship products
• Provide services
• Have physical presence
• Generate revenue

Step 2: Identify where you plan to expand (next 3 years)

Consider:

• Target markets for growth
• Planned product launches
• International partnerships or distributors
• New geographies you're entering

Step 3: Calculate budget

Determine your available budget for trademark filings:

• Minimum: $250-$350 (single country)
• Recommended: $1,100-$1,500 (US + EU or US + UK + Canada)
• Comprehensive: $2,000-$3,000+ (multiple regions)

Step 4: Prioritize jurisdictions

Rank jurisdictions by:

1. Current revenue percentage
2. Future growth potential
3. Competitor presence
4. Enforcement feasibility

Step 5: Choose your filing strategy

Based on the above analysis:

• Option A (Startup/Budget): File in one core market (US or EU)
• Option B (Growth): File in two regions (US + EU)
• Option C (Comprehensive): File in 3+ jurisdictions or use Madrid Protocol (Chapter 14)

What's Next

You've developed your multi-jurisdictional filing strategy and know where to file. Chapter 9 walks you through preparing a complete, accurate trademark application with all required elements: owner information, mark representation, drawings, specimens, goods and services descriptions, and fees.